State Farm Mutual Automobile Insurance Company v. VistaPrint Technologies Ltd
Claim Number: FA1504001613025
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, Illinois, United States of America. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2015; the Forum received payment on April 6, 2015.
On April 6, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <degreesstatefarm.com>, servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@degreesstatefarm.com, postmaster@servicestatefarm.com, postmaster@llcstatefarm.com, postmaster@strategiestatefarm.com. Also on April 8, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 12 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the STATE FARM mark in connection with its business in the insurance and financial services industry. Complainant has registered the STATE FARM mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,979,585, registered June 11, 1996), which establishes rights in the mark.
Respondent’s <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names are confusingly similar to the STATE FARM mark as they fully incorporate the STATE FARM mark, add the generic top-level domain “.com”, and the generic/descriptive terms which include “degrees”, “services”, “llc”, or “strategies.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, or the <strategiestatefarm.com> domain name, nor has Complainant given Respondent any authorization to register domain names which incorporate the STATE FARM mark or any variation of the mark. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the resolving pages of the disputed domain names are merely an advertisement which serves to divert Internet users to Respondent’s website.
Respondent has acted in bad faith. Respondent’s registration of multiple domain names in the present case suggests a bad faith pattern of domain name registrations pursuant to Policy ¶ 4(b)(ii). Respondent uses the disputed domain names to attract Internet users to its website for commercial gain. Finally, Respondent registered and used the disputed domain names with actual and/or constructive knowledge of the STATE FARM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the STATE FARM mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address webpages displaying an advertisement which serves to divert Internet users to Respondent’s website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the STATE FARM trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> each incorporate the STATE FARM mark, add the top-level domain name “.com”, and add a generic/descriptive term which include: “degrees”, “services”, “llc”, or “strategies.” Notwithstanding the differences between each domain name and Complainant’s trademark, each domain name is nevertheless confusingly similar to Complainant’s STATE FARM mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain names lists “VistaPrint Technologies Ltd” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain names merely to display an advertisement which serves to divert Internet users to Respondent’s own website. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that using a domain name to promote related advertising was a commercial use that was not bona fide); see also, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain name.
Each at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith in registering and using the at-issue domain names pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s registration of the <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names in the present case suggests a bad faith pattern of domain name registrations pursuant to Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Additionally, Respondent intended to attract Internet users for commercial gain by trading off the goodwill associated with Complainant’s mark and profiting from Internet users’ confusion as to the source, sponsorship, or affiliation of the at-issue domain names, with Complainant. Respondent’s use of the <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names demonstrates that Respondent was intending to profit via the hyperlinks displayed on webpages addressed by the at-issue domain names and shows bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Respondent registered the <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names knowing that Complainant had trademark rights in the STATE FARM mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of the mark into the four at-issue domain names. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names precisely to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <degreesstatefarm.com>, <servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <degreesstatefarm.com>, servicestatefarm.com>, <llcstatefarm.com>, and <strategiestatefarm.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 17, 2015
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